UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC. AND PANASONIC LIQUID CRYSTAL DISPLAY CO.,
`LTD.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01028
`Patent No. 9,793,299
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC. AND PANASONIC LIQUID
`CRYSTAL DISPLAY CO., LTD.’S PRE-INSTITUTION SUR-REPLY
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TIANMA MICROELECTRONICS CO. LTD.,
`Petitioner,
`v .
`JAPAN DISPLAY INC. AND PANASONIC LIQUID CRYSTAL DISPLAY CO.,
`LTD.,
`Patent Owner
`_______________
`Case IPR No: IPR2021-01028
`Patent No. 9,793,299
`_______________
`
`PATENT OWNER JAPAN DISPLAY INC. AND PANASONIC LIQUID
`CRYSTAL DISPLAY CO., LTD.’S PRE-INSTITUTION SUR-REPLY
`
`
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`Contrary to Petitioner’s argument, “[a] holistic evaluation of the Fintiv
`factors,” which would weigh all six Fintiv factors, favors discretionary denial. Paper
`8 at 1 (“Reply”). Petitioner has never argued, nor could it, that factor 5 (“whether
`the petitioner and the defendant in the parallel proceeding are the same party”)
`weighs in favor of institution. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15
`at 8 (P.T.A.B. May 13, 2020). In its Reply, Petitioner appears to have abandoned its
`argument that factor 1 (“whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted”) “is, at best, neutral” given that its
`motion to transfer was denied. Id. at 7; Paper 2 at 8 (“Petition”); see also Ex. 2005
`(Order denying transfer motion). Further, an analysis of Fintiv factors 2, 3, 4, and 6
`demonstrates why Petitioner’s argument should be rejected.
`Fintiv Factor 2 considers the proximity of the court’s trial date to the projected
`statutory deadline for the Board’s final written decision. “If the court’s trial date is
`earlier than the projected statutory deadline, the Board generally has weighed this
`fact in favor of exercising authority to deny institution under NHK.” Fintiv, Paper
`11 at 9. Petitioner recognizes that the district court trial date will precede the Board’s
`statutory deadline for a final written decision, Reply at 1-2, but ignores the ten full
`months between the district court trial date (February 7, 2022) and the Board’s final
`written decision (December 16, 2022). To evade this reality, Petitioner cites
`Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01183, Paper 17 at
`38-39, 47 (P.T.A.B. Feb. 10, 2021) as a single example in which the Board instituted
`review despite a ten-month gap between the district court trial and the final written
`decision dates in the IPR. But Petitioner’s reliance is misplaced, because the two
`
`–1–
`
`
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`Fintiv factors that supported institution in Samsung swing the other way here. First,
`the Board found that the Samsung Petitioners’ Sotera-like stipulation preventing
`overlap of arguments between the Board and district court weighed in favor of
`institution under Fintiv Factor 4. Id. at 43. But more recent cases establish that these
`types of stipulations are not always dispositive of institution, and, as Patent Owner
`explains in detail below, Petitioner’s stipulation here does not appreciably simplify
`the district court case. Second, the Board found that the Samsung Petitioners had
`presented “a strong unpatentability challenge to every challenged claim” under
`Fintiv Factor 6. Id. at 46. But here, as Patent Owner explains in its preliminary
`response (Paper 7 at 27-48), Petitioner has only presented weak challenges to every
`challenged claim. Third, the Samsung decision made no mention of an extensive
`prior art products invalidity defense like the one put forward by Petitioner in the
`district court proceeding, which will require the district court to analyze the same
`prior art references asserted here.
`Additionally, a more recent Samsung decision, Samsung Elecs. Co., Ltd. v.
`Clear Imaging Research LLC, IPR2020-01551, Paper 12 at 13 (P.T.A.B. Feb. 17,
`2021) (“Samsung II”), denied institution when the trial was scheduled to begin more
`than ten months before the due date of the final written decision, and is more closely
`aligned with the facts here. Id. at 13. In Samsung II, the Board noted that the original
`trial date had never changed and was unlikely to ever be delayed. Id. at 11-14. The
`Board agreed with the Patent Owner that this factor weighed heavily in favor of
`denying institution, quoting Fintiv, Paper 11 at 9 (emphasis added) (“If the court’s
`trial date is earlier than the projected statutory deadline, the Board generally has
`
`–2–
`
`
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`weighed this fact in favor of exercising authority to deny institution under NHK.”).
`Id. at 13. See also Cisco Systems, Inc. v. Oyster Optics, LLC, IPR2021-00319, Paper
`9 at 10-12 (P.T.A.B. June 8, 2021). (finding that trial date seven months before
`Board’s written decision due date favored denial of petition). Such is also the case
`here—the judge in the district court has made clear his preference to maintain the
`current trial date. See Ex. 2001 (First Amended Docket Control Order).
`Petitioner goes on to speculate that “it is entirely possible” that Factor 2 may
`be rendered moot due to the district court’s order to narrow asserted claims. Reply
`at 1. This speculation should be accorded no weight because it is inappropriate and
`wrong. Patent Owner has no plan to drop the ’299 patent from the district court case.
`Klein Decl., ¶5.
`Fintiv Factor 3 considers the timing of the petition and the investment in the
`proceeding by the court and the parties. Petitioner claims it “moved with speed and
`diligence” by filing the IPRs five months after Patent Owner served its infringement
`contentions. Reply at 2. Petitioner wrongly complains that Patent Owner “refused
`to narrow the number of claims and issues until service of its infringement
`contentions,” id., ignoring that (1) Petitioner had been on notice of its infringement
`since at least August 31, 2020, and (2) Patent Owner served infringement
`contentions at the time specified by the district court’s docket control order. In any
`event, the relevant date is the date of filing the complaint, not the serving of
`infringement contentions. 35 U.S.C. §315(b). This petition was filed on June 8,
`2021, nine months after the complaint was filed. Further, this petition was filed three
`months after Petitioner served its invalidity contentions in the district court case,
`
`–3–
`
`
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`which, as Patent Owner has explained, significantly overlap with the grounds in this
`petition. This cuts against Petitioner’s claim of “speed and diligence.”
`Fintiv factor 3 also considers “the amount and type of work already completed
`in the parallel litigation by the court and the parties at the time of the institution
`decision,” including whether “the district court has issued substantive orders related
`to the patent at issue in the petition, this fact favors denial,” and notes that “more
`work completed by the parties and court in the parallel proceeding tends to support
`the argument that the parallel proceeding is more advanced, a stay may be less likely,
`and instituting would lead to duplicative costs.” Fintiv, Paper 11 at 9-10. Petitioner
`recognizes that the district court has already expended resources addressing the
`parties’ claim construction positions and issuing a claim construction order. Reply
`at 3. But in arguing merely that “a substantial portion of work and trial is yet to
`come after institution,” Petitioner wholly discounts the significant efforts and
`resources the parties have expended and will expend prior to the institution date of
`December 16, 2021, and fails to provide any examples of the “substantial portion of
`work” that will occur later, apart from trial. The parties have already exchanged
`expert reports addressing infringement and validity of each of the 135 currently
`asserted claims. This week alone, the parties have taken a collective eight days of
`expert depositions, and will take eight more in the coming weeks. Klein Decl., ¶6.
`Seven of those days are focused solely on validity. Id. Further, by December 16,
`many of the important pretrial deadlines will have passed: closing of expert
`discovery, filing dispositive and Daubert motions, responding to dispositive and
`Daubert motions, serving pretrial disclosures, serving objections to pretrial
`
`–4–
`
`
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`disclosures, and serving objections to rebuttal pretrial disclosures and filing motions
`in limine. See Ex.2001 at 1-3; Ex.1024 at 4. Thus, all the work relevant to claim
`construction, infringement, validity, claim construction, fact discovery, and expert
`discovery will be completed by the institution date. See Samsung Elecs., IPR2020-
`01551, Paper 12 at 16 (finding significant investment of resources in the case when
`“some of the work relevant to patent validity, including claim construction, fact
`discovery, and expert discovery” had been completed). At this advanced stage, a
`stay of the parallel proceedings (which Petitioner has never requested) is unlikely,
`and institution would only lead to duplicative costs, weighing against institution.
`Fintiv, Paper 11 at 9.
`Fintiv Factor 4 evaluates the overlap between issues raised in the Petition and
`in the district court proceeding. “[I]f the petition includes the same or substantially
`the same claims, grounds, arguments, and evidence as presented in the parallel
`proceeding, this fact has favored denial.” Id. at 12. Petitioner leans heavily on its
`purported Sotera-like stipulation, but this stipulation will not serve to simplify the
`district court case. See Reply at 1-2, 4, and 5. Petitioner has filed petitions against
`only seven of the fifteen patents in the district court case. For five of those seven
`patents, Petitioner’s invalidity case involves alleged prior art products in
`combination with the same references asserted in the respective petitions and thus
`would be unaffected by the stipulation because the substance of those references will
`still be at issue. See Ex.2013 at 9-16 (Defendant’s Preliminary Invalidity
`Contentions). See also Defendant’s Motion for leave to Supplement Invalidity
`Contentions, Ex.2007 at 7 (“Here, [Petitioner] intends to use Plaintiffs’ recently
`
`–5–
`
`
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`produced prior art products, as modified by references of which Plaintiffs have been
`long aware, to invalidate seven of the asserted patents”). Thus, only two of the
`fifteen patents would be impacted, which is not an appreciable narrowing of the case.
`Petitioner argues that “Patent Owner misses the point” of a Sotera-type
`stipulation because it “does not apply unless the Board institutes the petition” and
`“[u]ntil then, it is irrelevant what references and grounds Petitioner pursues it he
`district court.” Reply at 5. Patent Owner disagrees. Because Patent Owner
`withdrew its opposition to Petitioner’s Motion for Leave to Supplement Invalidity
`Contentions so that any prior art raised in Petitioner’s IPRs could be in the district
`court case, Ex.2012, the Board does not face the issue of whether the grounds
`overlap: they do completely. Therefore, Fintiv factor 4 weighs against institution.
`Fintiv Factor 6 considers other circumstances that may impact the Board’s
`exercise of discretion, including the merits. Fintiv stated that a full analysis is not
`necessary, but rather “the parties may point out, as part of the factor-based analysis,
`particular ‘strengths or weaknesses’ to aid the Board in deciding whether the merits
`tip the balance one way or another.” IPR2020-00019, Paper 15 at 15. Petitioner
`stands on the analysis provided in its preliminary response showing the merits of this
`Petition are weak, which further supports denying institution. See Paper 7 at 27-48.
`For at least the reasons set forth above, Patent Owner respectfully requests
`that the Board exercise its discretion to deny institution of the Petition.
`
`–6–
`
`
`
`Dated: October 22, 2021
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`Respectfully submitted,
`
`/Eric J. Klein/
`Eric J. Klein (Reg. No. 51,888)
`Lead Counsel for Petitioner
`eklein@velaw.com
`VINSON & ELKINS L.L.P.
`2001 Ross Avenue, Suite 3900
`Dallas, TX 75201
`Customer No. 22892
`TEL: (214) 220-7700
`FAX: (214) 220-7716
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that, in accordance with 37 C.F.R. §42.6(e) and 37
`C.F.R. §42.105, service was made on Petitioner as detailed below.
`Date of service October 22, 2021
`Manner of service Via electronic mail by agreement of the parties
`Documents served Patent Owner Japan Display Inc. and Panasonic Liquid
`Crystal Display Co., Ltd.’s Pre-Institution Sur-Reply to
`Petition for Inter Partes Review of United States Patent No.
`9,793,299 Pursuant to 35 U.S.C. § 313, 37 C.F.R. § 42.107
`
`–7–
`
`
`
`Persons served
`
`Lead Counsel
`Joshua L. Goldberg (Reg. No. 59,369)
`joshua.goldberg@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`Patent Owner’s Pre-Institution Sur-Reply
`
`Back-Up Counsel
`Qingyu Yin (Reg. No. 61,329)
`qingyu.yin@finnegan.com
`
`David C. Reese (Reg. No. 67,942)
`david.reese@finnegan.com
`
`Daniel F. Klodowski (Reg. No. 72,693)
`Daniel.klodowski@finnegan.com
`
`Gracie K. Mills (66,946)
`gracie.mills@finnegan.com
`
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`/Eric J. Klein/
`Eric J. Klein
`Lead Counsel for Petitioner
`Registration No. 51,888
`
`US 8375005
`
`–8–
`
`
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